1. Basic principles and eligibility criteria

Vietnam follows the "first-to-file" system for trademark registration. This means that the applicant who files the earliest application for a specific trademark will be granted the registration, regardless of whether they were the first to use the mark in the marketplace. If multiple applications meet these requirements and have the same filing date, the trademark will only be granted to a single application – if all applicants agree.

A mark to be eligible for registration in Vietnam must meet the following criteria:

Distinctiveness: The mark must be sufficiently unique to distinguish your goods or services from those of others. This means it cannot be generic, descriptive, or commonplace for the relevant goods or services.
Lawful: The mark must not violate any laws or public order. This includes marks that are offensive, discriminatory, or promote illegal activities.
Not deceptive: The mark must not be misleading or confusing to consumers. This means it cannot be similar to existing trademarks or contain false information about the goods or services.
Not identical or similar to existing trademarks: The mark must not be identical or confusingly similar to a trademark already registered for similar goods or services. This includes marks that differ only slightly in spelling, pronunciation, or appearance.

Additional factors that may be considered include:

Acquired distinctiveness: Even if a mark is not inherently distinctive, it may become eligible for registration if it has acquired distinctiveness through extensive use in the marketplace.
Geographical indications: Marks that are geographical indications, meaning they identify goods or services originating from a specific geographical area, may be subject to special restrictions.
Collective marks and certification marks: These types of marks are subject to additional requirements, such as the existence of a collective organization or the ability to certify the characteristics of goods or services.

It is important to note that these criteria are interpreted and applied on a case-by-case basis by the National Office of Intellectual Property. Consulting with a trademark attorney can help you determine if your mark is likely to be eligible for registration.

2. Required documents and fees

Information needed:

Full name, address, and nationality of the applicant;
Description of the trademark: meaning, colors claimed, translation or transliteration of characters into English if the mark contains foreign characters;
List of goods/services to be covered by the trademark and if possible, the class(es) of the respective goods/services according to the International Classification (if known);
If a priority is claimed: statement of country, application number, and filing date of the original foreign application from which the priority is claimed.

Documents Needed:

Power of Attorney from the applicant (notarization is not required);
9 specimens of the mark (the size of each specimen is not smaller than 15mm x 15mm and not larger than 80mm x 80mm);
If the Convention priority is claimed: a certified copy of the priority document(s) and the English translation thereof.
02 copy of The Declaration of Trademark Registration

3. Trademark Registration Procedures in Vietnam

Step 1: Before proceeding to apply for trademark registration

- Conduct a trademark availability search: This is crucial to ensure your chosen mark is not already registered or applied for by another party. You could conduct the basic trademark search on the published website of The National Office of Intellectual Property (NOIP)

- Prepare and file the application: This involves completing the official Declaration of Trademark Registration form, providing the required documents, and paying the prescribed fees.

Step 2: Apply at the National Office of Intellectual Property

After preparing the documents as well as the expected scope of protection, you can apply the dossier to the Intellectual Property Department. Once the application is filed, a trademark application will go through the following steps:

- Formality appraisal: As the name suggests, the formality appraisal will aim to check the validity of the application according to the formality requirements, the right to apply, the subject of exclusion, and the payment of fees. The NOIP will then decide whether the application is formally valid or not. If it is not appropriate, it will issue a Notice of Intention to reject the formally valid application and request the application owner to amend it accordingly.

- Publication of the application: After a decision has been made to accept a formally valid application, the application will be published in the Industrial Property Official Gazette for other parties to know within 2 months from the date of the Decision of acceptance.

- Appraisal of application content: This is the most important part, so the legal deadline is also the longest. At this stage, the Trademark registration application is evaluated for protection conditions according to the law on trademarks. Those protection conditions include potential reference, self-distinctiveness ability, ability to distinguish from reference, and distinguishing elements. This lookup is done on the Intellectual Property Office's software and is notoriously complex, to ensure a very low error rate. Therefore, the time to perform this step is also the longest among the stages in this step, ranging from 9 - 12 months.

Step 3: Final Results

- Decision Making: Regardless of whether the application passes the Substantive Examination step or not, one of two Decisions will be made, approval or rejection. In case of approval and full payment of fees, the National Office of Intellectual Property will issue a Decision to grant a Protection Title, publish it in the Industrial Property Official Gazette, and record it in the National Register of Industrial Property.

- After receiving notice of intention to grant a protection title, according to law, the applicant shall pay the granting fee.

4. Duration and renewal of trademark rights

The initial registration period for a trademark in Vietnam is 10 years from the date of filing. The registration can be renewed for subsequent 10-year periods indefinitely. To maintain the validity of the registration, renewal fees must be paid before the expiration date. As such, close surveillance of the trademark is ever so important, especially in companies with more than 100 trademarks.

5. Protection of unconventional trademarks

In addition to traditional trademarks consisting of words, logos, and images, Vietnam also allows the registration of unconventional trademarks such as:

Sound marks: distinctive sounds associated with a brand. The newest installment follows the 2022 amendment, however, there has not been a detailed guide from the Ministry of Science and Technology to accurately perform registration on this particular mark.
Shape marks: distinctive shapes of products or packaging
Hologram marks: distinctive holograms used on products or packaging

Vietnam's protection of unconventional trademarks is still evolving and subject to stricter requirements compared to traditional trademarks. However, it offers valuable opportunities for brands seeking to protect distinctive sounds, scents, shapes, and holograms. While Vietnam offers protection for unconventional trademarks like sounds, shapes, and holograms, it requires stricter scrutiny and higher fees compared to traditional marks. To qualify, these marks must be highly distinctive and non-functional, demanding expert evidence in applications. Although case law is limited, the benefits of registering unconventional trademarks are undeniable, empowering brands to differentiate themselves, enhance consumer recognition, and secure valuable licensing opportunities. In a competitive market, unconventional trademark protection offers a strategic advantage for brands seeking to establish a strong and sustainable presence in Vietnam.

6. What are the benefits of registering a trademark in Vietnam?

Exclusive Rights: A registered trademark grants you exclusive rights to use the mark for the designated goods or services within Vietnam. This means no other company can use the same or similar mark for the same or similar goods or services without your permission. This exclusivity helps you protect your brand identity and prevent others from capitalizing on your reputation.

Brand Protection: Trademark registration serves as a shield against infringement. It allows you to take legal action against anyone who copies or imitates your trademark, thereby preventing consumer confusion and protecting the value of your brand. This legal recourse is crucial for safeguarding your market share and ensuring a fair competitive environment.

Increased Brand Value: A registered trademark adds a layer of legitimacy and professionalism to your brand. Consumers are more likely to trust and associate with brands that have taken legal steps to protect their intellectual property. This enhances brand perception and can lead to increased customer loyalty, market share, and ultimately, higher profits.

Competitive Advantage: In a crowded marketplace, a registered trademark can give you a distinct advantage over your competitors. It enables you to stand out from the crowd and differentiate your products or services from those of others. This differentiation can attract new customers and help you establish a strong market position.

International Registration: Vietnam is a member of the Madrid Protocol, which allows you to file a single international application for trademark protection in multiple countries. By registering your trademark in Vietnam, you can use this protocol to extend protection to other member countries, simplifying the process and reducing costs.

Licensing Opportunities: A registered trademark gives you the right to license its use to other businesses. This can be a valuable source of revenue and can help you expand your brand reach and market penetration without directly investing in new operations.

Dispute Resolution: In the event of a trademark dispute, a registered trademark gives you a stronger legal footing. You can rely on the official registration certificate as evidence of your ownership and rights, facilitating a smoother and more favorable resolution of the dispute.

Investment Protection: For foreign companies entering the Vietnamese market, trademark registration demonstrates a commitment to the market and helps protect their investments from potential infringers. This can increase investor confidence and attract further investment.

Overall, registering your trademark in Vietnam is a strategic investment that offers numerous benefits for businesses of all sizes. It protects your brand identity, enhances brand value, provides a competitive advantage, and opens up opportunities for international expansion and licensing. In today's increasingly competitive marketplace, trademark registration has become an essential tool for businesses seeking to build a successful and sustainable brand in Vietnam.

7. Conclusion

In today's dynamic Vietnamese marketplace, safeguarding your brand identity is crucial for long-term success. Trademark registration emerges as a powerful tool, offering exclusive rights, brand protection, and a competitive advantage. By protecting your trademark, you deter imitators, build trust with consumers, and position your brand for sustainable growth. Moreover, Vietnam's recognition of unconventional trademarks provides exciting opportunities for brands seeking innovative ways to stand out. By embracing these protections, you equip your brand with a robust shield, enabling you to navigate the competitive landscape with confidence and seize the full potential of the Vietnamese market. Remember, a registered trademark is an investment in your brand's future, paving the way for lasting success and recognition in Vietnam.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.